AMS mark owner loses '' domain name dispute


In Arbeitsmarktservice v Auto- und Motoren-Service GmbH (4 Ob 207/02y), the Austrian Supreme Court has refused to order the transfer of '' to the plaintiff. The court held that both parties have legitimate rights to use the domain name but the defendant has priority because it registered it first.

Arbeitsmarktservice (Arbeits), a public body involved in employment services, operates under the company name 'AMS'. It registered the trademark AMS in 1996. Auto- und Motoren-Service GmbH (Auto) also operates under the name 'AMS' and has done so since 1975. It registered '' in 2001 to promote its automobile business. Arbeits brought proceedings against Auto on the basis that its registration and use of '' infringed Arbeits's trademark rights in AMS.

The case eventually proceeded to the Austrian Supreme Court. Arbeits conceded that Auto's services differed substantially from its own but argued that its mark is well known and that this (i) precludes other parties from using the term 'AMS' for any type of service; and (ii) gives Arbeits greater rights than Auto in the disputed domain name.

The court rejected Arbeits's arguments and refused to transfer ''. It held that, although Arbeits's trademark registration is valid, it is not sufficiently well known to justify extra protection. Auto, said the court, also has legitimate and prior rights to use 'AMS' because it registered that term as a company name in 1975. The court reasoned that as both parties have equal legitimate interests in the domain name, priority of registration was a determining factor. It further held that, since Arbeits had registered and was using '', it had not been deprived of using its mark as a domain name. The court concluded that internet users are well aware that domain names differing only on their second level can belong to different parties.

Reinhard Schanda and Stephanie Heine-Geldern, Sattler & Schanda Rechtsanwälte, Vienna

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